The Complainant is Bollore of Ergue Gaberic, France, represented by Nameshield, France.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 13, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 13, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 18, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on May 2, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was founded in 1822 and deals in transportation and logistics, communications and media, and electricity storage and solutions. It is one of the largest companies in the world and is listed on the Paris Stock Exchange.
The Complainant owns several International trade mark registrations for BOLLORE including International Registration Nos. 704697 and 595172. These registrations date from December 11, 1998 and August 14, 1992, respectively.
The Complainant owns and operates its business through various domain names, the primary one being , which was registered on July 25, 1997.
The disputed domain name was registered on March 2, 2017 and resolves to a website with no active content, merely displaying the disputed domain name at the top, and a small header indicating " — coming soon". 5. Parties' Contentions A. Complainant
1. The disputed domain name is confusingly similar to the Complainant's mark, BOLLORE. The entire trade mark is incorporated into the disputed domain name. The addition of the hyphen and of the letters "us" (which could refer to the United States) is not sufficient to avoid the confusing similarity with the BOLLORE trade mark. In fact, it adds to the confusion because it causes an immediate association with the sales office of the Complainant in the geographic area in question. The generic Top-Level Domain ".com" which features in the disputed domain name does not change the overall impression of the designation as being connected to the Complainant's trade mark, BOLLORE.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant or authorized by the Complainant to use the BOLLORE trade mark. The Respondent is not commonly known by the disputed domain name or BOLLORE. There is no evidence of use or demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offer of products or services, there being no active use of the disputed domain name. The Respondent would not be able to use the disputed domain name without infringing the Complainant's proprietary rights in BOLLORE.
3. The disputed domain name was registered and is being used in bad faith. The BOLLORE mark has been considered to be distinctive in various earlier UDRP panel decisions including BOLLORÉ v. Bollore / Bollore,WIPO Case No. D2016-1979, and Bollore SA v. Contact Privacy Inc. Customer 0141407888 / Pastel Nathaniel karl-loic,WIPO Case No. D2015-2113. Given the distinctiveness and reputation of the Complainant's BOLLORE trade mark, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant's BOLLORE trade mark. The incorporation of a famous mark into a domain name coupled with an inactive website may be evidence of bad faith registration and use. There is no evidence of any actual or contemplated good faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding
The Complainant requested that English be the language of the proceeding although the Registration Agreement is in Chinese. The reasons are:
(i) English is most widely used in international relations and is one of the working languages of the Center;
(ii) the disputed domain name is formed by words in Roman characters and not in Chinese script;
(iii) in order to proceed in Chinese, the Complainant would have to retain specialized translation services at a cost very likely higher than the overall cost of the proceeding; and
(iv) the Respondent is able to respond in Chinese.
Paragraph 11 of the Rules prescribes that in the absence of an agreement between the parties or unless specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement.
The Respondent did not reply to the Center on the issue of the language of the proceeding. Pursuant to the discretion the Panel has under paragraph 11 of the Rules, the Panel determines that English shall apply as the language of the proceeding. Taking into consideration the interest of ensuring that the administrative proceeding takes place "with due expedition" (paragraph 10(b) of the Rules), the fact that the disputed domain name is not in Chinese characters, and that the Respondent was duly notified by the Center of the nature of the proceeding as well as the option it had to respond on the issue of the language of the proceeding, the Panel is of the view that it would be proper for the proceeding not to be delayed by requiring the Complainant to submit the Complaint and documentary evidence in Chinese. The Respondent could have indicated if it had valid concerns stemming from the proceeding being conducted in English, but failed to take the opportunity to. The Respondent's interests are not prejudiced by the Panel's decision on this issue. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has trade mark rights in BOLLORE, which predate the Respondent's registration for the disputed domain name by many years. The disputed domain name is different in that "-us" is added, and the existence of the Top-Level Domain ".com".
The addition of the hyphen and letters "us" does not serve to remove the confusing similarity to the Complainant's mark, BOLLORE, which is clearly identifiable within the disputed domain name. In fact, the addition of the hyphen and the letters "us" would understandably be perceived by Internet users to suggest that the disputed domain name relates to the BOLLORE trade mark of the Complainant, but which is specific to or intended for customers from the United States.
The addition of the Top-Level Domain ".com" does not serve to remove the confusing similarity since it is a technical requirement which applies to all domain name registrations.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied by the Complainant. B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent's registration and use of the disputed domain name; there is no evidence that the Respondent is commonly known by the disputed domain name. The BOLLORE trade mark has been in use and associated exclusively with the Complainant for a long time; and the disputed domain name was registered many years after the Complainant registered its BOLLORE trade mark.
The Respondent was given the opportunity by way of reply to demonstrate it has rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, the Respondent did not file a response. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances, any of which and "without limitations", if found by the Panel, would constitute evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the website or location.
In the instant case, there is no evidence of any active webpage associated with the disputed domain name. The disputed domain name therefore is akin to being passively held. Passive holding of a domain name has to be considered in the context of the circumstances in determining whether it constitutes evidence of good or bad faith. (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
The Respondent in this case chose a domain name incorporating and combining a distinctive trade mark of the Complainant with the letters and hyphen, "-us". There does not appear to be any connection between the Respondent and the name "Bollore", nor is one conceivable in view of the fact that the term "Bollore" has no meaning (or is otherwise not a commonly-known generic term), and the Respondent is apparently from Fujian, China. The Respondent's registration of the disputed domain name incorporating the exact same term as the Complainant's trade mark cannot be coincidental but was deliberate, in full knowledge of the Complainant and/or its BOLLORE trade mark.
In the absence of any evidence to the contrary, it can be surmised that the only probable reason why the disputed domain name was selected and registered by the Respondent was for the purpose of attracting and/or misleadingly divert Internet users to the Respondent's website (albeit none was created as yet) for commercial gain. Internet users seeking information on the Complainant would naturally expect to find on the disputed domain name information relating to the company and its goods or services. The Respondent would understand that Internet users would be misled into thinking that the disputed domain name was related to the Complainant's offering of services to US-based customers. The Panel is satisfied that there is no actual or contemplated use of the disputed domain name by the Respondent which would not, in all likelihood, amount to bad faith use within the meaning of the Policy.
In the circumstances, the Panel concludes that the registration and use of the disputed domain name have been in bad faith. The Complainant has therefore established its case under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: May 16, 2017
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